DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2025 has been entered.
Claim Objections
Claim 6 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 3. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 18 recites the limitation "artificial graphite". There is insufficient antecedent basis for this limitation in the claim. The examiner suggests inserting an “an” before the phrase.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-6, 9-13 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Double et al (US 4,792,361) in view of Conner et al (US 2018/0037461) and Kitami et al (CN 101210595, please refer to machine translation for mapping).
Regarding claims 1, 4-5, 9 and 11-13, Double teaches a friction material (Abstract) comprising:
A matrix and friction modifier in the following weight ratio:
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66
296
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The matrix has the following composition:
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286
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And the friction modifier has the following composition:
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306
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The compositions are free from titanate and copper.
For the amounts of graphite and coke, it is noted that the friction modifier is present in the friction material in a range from 20-60 wt. %, then the amount of graphite can be calculated to range from 0 to 9 % by weight and the amount of coke can be calculated to range from 0 to 3 % by weight.
While Double teaches that the graphite acts like a dry lubricant (col. 3, lines 45-55), it fails to teach a) that the graphite is a natural vein graphite and b) that the coke has an average particle diameter of 200 to 1000 microns.
Regarding a), Conner teaches that natural graphite such as vein graphite ([0004]) is used in brake linings and as lubricants ([0003]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the vein graphite of Conner as the graphite component of Double. One would have been motivated to do so in order to receive the expected benefit of using the highest quality of natural graphite (Conner, [0004]).
Regarding b), Kitami teaches a friction material which contains coke which has a size which ranges from 150 to 400 microns (page 5).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the coke of Double have the particle size as taught by Kitami. One would have been motivated to do so in order to receive the expected benefit of balancing improvement of wear resistance vs segregation of the particles (Kitami, page 5).
Regarding claims 3, 6 and 10, Double teaches that the amount of steel fiber can be calculated to range from 0 to 21 wt. %.
Regarding claim 18, Double teaches that the lubricant can also contain a synthetic graphite (col. 3, lines 45-55).
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Double et al (US 4,792,361) in view of Conner et al (US 2018/0037461), Kitami et al (CN 101210595, please refer to machine translation for mapping) and Holinski (US 4,663,060).
The discussion regarding Double, Conner and Kitami in paragraph 9 above is incorporated here by reference.
Regarding claims 14-16, Double teaches that graphite is incorporated in the friction material (Examples), but fails to teach the particle size.
Holinski teaches a solid lubricant that can contain graphite (col. 2, lines 15-20) that has a particle size of under 50 microns (col. 2, lines 65-67).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have the graphite particles of Double have the particle size as taught by Holinski. It would have been nothing more than using known component in a typical manner to achieve predictable results.
Response to Arguments
The 35 USC 112 rejection set forth in paragraph 4 of the office action mailed on June 10, 2025 has been withdrawn in light of applicant’s amendment filed on September 8, 2025.
Applicant's arguments filed September 8, 2024 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: Double teaches that the proportion of coke relative to the entire friction material is 0 to 2.0 % by mass.
Examiner’s response: This is calculated based on the proportion of the friction modifiers being 40%, however the chart in col. 8 of Double indicates that the amount of the friction material ranges from 20-60 %. Therefore, the amount of the coke can be calculated to range from 0 to 3.0 wt. % which overlaps the recited range.
Applicant’s argument: The prior art references fail to teach the new limitations required by claim 1.
Examiner’s response: There is a newly presented reference, Kitami which teaches the size limitations of the coke. Double and Conner provide the teachings for all the other recited limitations (please refer to above rejection).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764